United States. Congress. Senate. Committee on the.

The Industrial reorganization act. Hearings, Ninety-third Congress, first session [-Ninety-fourth Congress, first session], on S. 1167 (Volume pt. 7) online

. (page 123 of 140)
Online LibraryUnited States. Congress. Senate. Committee on theThe Industrial reorganization act. Hearings, Ninety-third Congress, first session [-Ninety-fourth Congress, first session], on S. 1167 (Volume pt. 7) → online text (page 123 of 140)
Font size
QR-code for this ebook


bar to the valid issuance of the ENIAC patent.

1.1.8 Eckert and Mauchly took commercial advantage of Army Ordnance's
public uses of the ENIAC machine and also placed the ENIAC machine in
public use themselves by demonstrating it to potential customers as a part of
their attempts to commercialize the ENIAC machine subject matter prior to
the critical date.

1.1.8.1 Eckert and Mauchly intended that the widespread publicity to be gained
for them personally from the ENIAC press demonstration, dedication and open
house in February, 1946, would advance their private commercial business
interests.

1.1.8.2 More than one year prior to the June 26, 1947 filing date of the ENIAC
patent, beginning at least as early as the fall of 1944, Eckert and Mauchly placed
the claimed invention disclosed in the ENIAC patent in public use and on sale
by describing and demonstrating the ENIAC machine to their intended customers
for their own commercial gain.

1.1.8.3 Eckert and Mauchly took full private business advantage of the publicity
and dedication activities as a convenient forum for their solicitation of future
computing machine contracts from government agencies.

1.1.8.4 During the fall of 1944. Mauchly called on various potential customers
to determine the business prosi^ects for selling high-speed computing or data
proces.sing machines. Prior to October, 1944, the ENIAC two-accumulator system
had been successfully built and operated. The completion of the ENIAC two-
accumulator system gave Eckert and Mauchly a tool by which they could convince
potential customers that a high-speed computing or data processing machine
could in fact be successfully built.



5811

1.1.8.5 Army Ordnance's contract (W-670-ORD-4926) for the ENIAC project
work required the University of Pennsylvania to grant the U. S. Government a
royalty-free license under all patents arising from the work done under the
contract. However, since the employment agreements of the engineers working
on the ENIAC project did not clearly require any assignment of their invention
rights to the University of Pennsylvania, the University was not in a position
to grant the Government such a license.

1.1.8.6 Prior to March, 1945, Eckert and Mauchly sought advice from George A.
Smith, a patent attorney, on methods of securing for themselves the commercial
invention rights arising from the work under the Army Ordnance contract.
Pursuant to his advice, Eckert and Mauchly a.sked the University of Pennsyl-
vania for the right to have their own patent attorney file patent applications
in their names on ideas arising out of the work on the project. During March,
1945, Eckert and JMauchly pressed for recognition of their commercial interests
hy the University of Pennsylvania in return for assurances that they would
help the University fulfill its obligations under the contract. Facing the fact
that it would require the cooperation of Eckert and Mauchly to fulfill its con-
tractual obligations to the U. S. Government, the University yielded the com-
mercial rights to any patents they might obtain based on the work on the
contract.

1.1.8.7 Mauchly was in personal contact with personnel of the U.S. Weather
Bureau as early as April, 1945, to learn their computing needs and to discuss
the ENIAC and future work with them. Eckert and Mauchly also followed up
their interest in business prospects at the U. S. Census Bureau throughout the
summer of 1945.

1.1. S.S On other ocacsions during 194.5. Eckert and Mauchly called on about
a dozen Census Bureau officials including Everett Kimball. Jr., Dr. Madow,
Morris H. Hansen, and James L. McPherson, in order to interest them in high-
speed computing or data processing machines. Hansen assigned McPherson the
task of evaluating Eckert and Mauchly's proposals regarding such a high-speed
computing or data processing machine. As a result of this assignment, McPherson
held meetings from time to time with Eckert and Mauchly at the Census Bureau.
During the meetings with McPherson and other census officials, Eckert and
Mauchly described the ENIAC and sought a contract to develop a similar but
more advanced machine for the Census Bureau.

1.1.8.9 In order to interest potential financial backers Earnest Cuneo and Lazar
Teper in the financial backing of an Eckert-Mauchly computer company, Eckert
and Mauchly displayed the ENIAC machine to them in January. 1946.

1.1.8.10 Eckert and Mauchly early sought private business advantage from
the fact of the ENIAC machine's completion by the Moore School in 1945 and its
constant practical use thereafter by Army Ordnance. For example, on February 15,
1946, Commander Reichelderfer of tne U. S. Weather Bureau attended the
ENIAC dedication and dinner on behalf of the U. S. Weather Bureau, being
seated at Mauchly's table at Mauchly's request. Mauchly's purpose in having
Reichelderfer present was one of private self-interest to advance his business
enterprise plans, held jointly with Eckert, by using the occasion of the ENIAC
dedication as a business promotion effort. During the dedication, Reichelderfer
and the other guests witnessed a demonstration of the ENIAC machine. There-
after, on February 21, 1946, Eckert and Mauchly again demonstrated the ENIAC
machine for Reichelderfer's associates Dr. Harry Wexler and Jerome Namias
of the U. S. Weather Bureau, and discussed with them the possible construction
of a similar computer for weather purposes. The contacts with and demonstrations
for Reichelderfer, Namias and Wexler were attempts to commercialize the
invention embodied in the ENIAC machine prior to the critical date, and resulted
in non-experimental public uses of the claimed invention disclosed in the ENIAC
patent prior to the critical date, con.stituting an absolute bar to the valid issu-
ance of the ENIAC patent.

1.1.8.11 By mid-March, 1946, Eckert and Mauchly had put out a number ol
commercial feelers, and were actively pursuing them. For example, on March 20,
1946, in order to promote their sale of a high-speed computing or data processing
machine. Eckert and Mauchly made a presentation to the Committee on Tabula-
tion Methods and Mechanical Equipment of the U. S. Census Bureau.

1.1.8.12 On March 22, 1946, Dean Pender of the University of Pennsylvania
demanded that Eckert and Mauchly either subjugate their personal commercial
interests to the interests of the University or have their employment by the
University terminated. On or about March 22, 1946, Eckert and Mauchly sub-



5812

mittecl their resignations from tlie University of Pennsylvania to take effect
March 31, 1946.

1.1.8.13 On April 2, 1946, two days after their resignations from the University
of Pennsylvania became effective, Eckert and Mauchly met with representatives
of the Weather Bureau, Census Bureau, and Bureau of Standards. During that
meeting, Eckert again described the ENIAC machine.

1.1.8.14 In order to promote their proposed sale of a computing machine, Eckert
and Mauchly invited representatives of the Census Bureau and National Bureau
of Standards to witness a demonstration of the ENIAC machine. The demon-
stration, held April 11, 1946. was attended by Eckert and Mauchly, Dr. John H.
Curtiss representing the National Bureau of Standards, and Mes.srs. A. A. Ber-
linsky. J. F. Bo.sen, Morris H. Hansen, and James L. McPherson, representing the
Census Bureau. During the April 11, 1946, demonstration, the ENIAC machine
was set up and running while its operation was explained. The April 11. 1946.
ENIAC demonstration was an essential part of Eckert and Mauchly's implemen-
tation of the plan to exploit electronic computing or data processing machines
commercially.

1.1.8.15 Following the April 11, 1946, ENIAC machine demonstration, Eckert
and Mauchly agreed to submit to the Census Bureau a set of specifications which
could be included in any contract which the Bureau would awai-d to them. The
April 11, 1946, ENIAC demonstration and Eckert and Mauchly's descriptions of
the ENIAC machine were Curtiss' principal sources of information about elec-
tronic computing and Eckert and Mauchly's principal credentials for competence
and credibility. On or about April 30, 1946, Eckert and Mauchly submitted some
tentative specifications of a proposed computing machine the April 11 demonstra-
tion.

1.1.8.16 Based on Curtiss' recommendation, Eckert and Mauchly were awarded
contract CST-7964 in the fall of 1946 to conduct a design study, including the
construction of components, and prepare a report based thereon proposing a com-
puter to be built for the Census Bureau. Contract CST-7964 directly followed
from the ENIAC machine demonstration and the sequence of visits and evalua-
tions of the technical competence of Eckert and ISIauchly by the Bureau of
Standards.

1.1.8.17 Eckert and Mauchly's demonstration of the ENIAC machine on April
11, 1946, was a commercialization by Eckert and Mauchly of the claimed in-
vention disclosed in the ENIAC patent and embodied in the ENIAC machine
prior to the critical date, and resulted In a non-experimental public use of "the
invention" of the ENIAC patent prior to the critical date, consulting an absolute
bar to the valid issuance of the ENIAC patent.

1.1.18 Eckert and Mauchly, in attempting to gain commercial and private busi-
ness advantage from the pre-critical date early practical operation of the ENIAC
machine, and the massive publicity thereof, advertised in their Eckert-Mauchly
Computer Corporation literature in 1940 that the ENIAC machine had been put
into operation in January, 1946.

1.1.8.19 With regard to the issue of Eckert and Mauchly's commercialization of
the ENIAC machine subject matter prior to the critical date, the Court has con-
sidered the conflict between, on the one hand, the disinterested testimony of Mr.
James L. McPherson and related contemporaneous documentary evidence, and, on
the other hand, the testimony of Eckert and Mauchly. The Court credits the testi-
mony of McPherson and corroborating docxmientary evidence, and holds that
Eckert and Mauchly knowingly sought to and did commercialize the ENIAC ma-
chine and any invention embodied therein prior to the critical date.

[1] 1.2 The usual standard in civil cases of proof by a fair preponderance of th^
evidence is easily and clearly satisfied.

1.3 I do not believe that the standard to be applied is that of clear and satis-
factory proof or clear and convincing proof or proof beyond a reasonable doubt.

1.4 If necessary for decision, I find that the more stringent standards have been
satisfied.

1.4.1 The Court has heard 22 live witnesses over many weeks of the trial relat-
ing to the history and facts surrounding the use of the ENIAC machine prior to
the critical date. The Court has .seen the newsreel film made in February, 1946,
showing the ENIAC machine actually being used for its intended purpose in a
clearly pulilicly intended setting.

1.4.2 Thousands of the documents received by the Court bearing on the public
use issue originated contemporaneously witli the relavant events and were ob-
tained from independent and disinterested sources.



5813

1.4.3 The Court credits this heavy weight of evidence, fully revealed for the
first time upon this record, as compelling a finding that the plaintiff has shown
by clear and satisfactory proof, or clear and convincing proof, or proof beyond a
reasonable doubt, that the claimed invention disclosed in the ENIAC patent was
in public use in this country prior to the critical date.

1.5 The use of ENIAC after December 1, 1945, was clearly not experimental in
nature.

1.5.1 Defendants contend that all uses of the ENIAC machine prior to the criti-
cal date are exempted from their otherwise clear barring effect because they con-
stitute experimental uses under Eckert and Mauchly's control, or for their benefit
and were necessary and essential to the completion or perfecting of the making
of "the invention" claimed by them. The facts are clearly to the contrary.

1.5.1.1 By December, 1945, Army Ordnance was using its ENIAC machine under
an operating contract W-lS-OOl-ORD-1706 (separate from contract 4926 under
which the ENIAC machine was built) which provided for the Moore School to
furnish sevices for the initial operation of the ENIAC machine at the Moore
School pending completion of the building at the Aberdeen Proving Ground where
the machine was to be later housed.

1.5.1.2 After the ENIAC machine was put into constant practical use by Army
Ordnance in December, 1945, the ENIAC group or team, including Eckert and
Mauehly, turned their attention to the commencement of work on the next genera-
tion of computer design, the ED VAC.

1.5.1.3 Eckert and Mauehly resigned from the Moore School in March, 1946, and
had no further official contact with any of the work with the ENIAC machine
after April 1, 1946.

[2] 1.5.2 The pre-critical date uses of the ENIAC machine were not made under
the surveillance of Eckert and Mauehly, and for the purpose of enabling them
to test the machine and ascertain whether it would answer the purpose intended
and to make such altreations and improvements as experience demonstrates to be
necessary, and therefore are not excused as experimental uses within the meaning
of Elizabeth v. Pavement Co., 97 U.S. 126 (1S77). The ENIAC machine demons-
ti-ated that it would answer its intended purpose in December 1945 when it was
used for production runs on the Los Alamos calculations.

1.5.3 By December 1, 1945, the ENIAC machine was under the custody, dominion
and control of the customer. Army Ordnance, and the relationship to the machine
of Eckert, Mauehly and the other engineers at the Moore School involved in the
ENIAC team effort was ot one of continuing inventoi'ship and experimentation.

1.5.4 The uses of the ENIAC machine from December, 1945, to the critical date
were for its intended purpose of performing automatic electronic digital computa-
tion, and were not for the experimental purpose of the completion or perfection of
the making of "the invention."

1.5.4.1 The uses of the ENIAC machine between December 1, 1945, and the criti-
cal date were not in the nature of testing, checking, or exeprimentation, but rather
were uses of the ENIAC machine for its intended practical puri^ose.

1.5.4.2 The Court has considered the ENIAC Service Log and the testimony
concerning the various entries which were made in it. The evidence is clear and
convincing that the Service Log is a rec*ord showing routine maintenance on the
ENIAC machine. The fact that such maintenance was performed does not in any
way detract from the non-exi>erimental nature of the various ENIAC public uses.
The Court has considered the assertion of defendants that the ENIAC Service
Log shows that changes to the machine were made. Tlie evidence is clear and
convincing that, without exception, the changes recorded in the Service Log were
not design changes of any significance to "the invention." but were instead minor
and routine refinements or adjustments of a non-inventive nature. This work on
the ENIAC machine was done by Homer Spence, the maintenance engineer for
ENIAC, after December 1, 1945, and was routine maintenance unrelated to the
completion or iierfection of "the invention."

[3] 1.5.4.3 The burden of proof of any exemption from the public use bar.
such as by reason of experimentation essential to the completion of the making
or perfecting of "the invention" by or for Eckert and IMauchly. rests with SR &
ISD, and has not been carried. Instead, Honeywell has proven such use to be
non-experimental and clearly practical.

2. On Sale

2.1 The claimed invention disclosed in the ENIAC was on sale prior to the
critical date.



5814

2.1.1 The entire subject matter of the ENIAC machine, represented by Eckert
and Mauchly to be that wliich "embodies our invention," is barred from valid
patentability because that machine was on sale in this country prior to the
critical date. . ^ . ^ ^,

2.1.2 The subject matter of the ENIAC patent, the invention of the automatic
electronic digital computer, is barred from valid patentability because that subject
matter was on sale in this country prior to the critical date.

2.1.3 All of the development activities at the Moore School, which resulted in
the construction and placing in public use of the ENIAC machine, were financed
by the United States Government.

'2.1.3.1 In 1943, officials of Army Ordnance ordered their Philadelphia office
to enter into a fixed price contract (W-i670-ORD-4926, hereinafter referred to as
the 4826 contract) with the Moore School for research and experimental work
in connection with the development of an electronic numerical integrator and
computer, generally referred to thereafter by the acronym "ENIAC." On June 21,
1943, the Moore School executed the 4926 contract which was dated June 5. 1943,
as a fixed price contract. The 4926 contract provided that any completed part
or unit was to be delivered to the Government F.O.B., floor of contractor's plant,
as soon as ix)ssible after December 31, 1943. It was not until Supplement 5 of the
4926 contract was executed in mid-January 1945 that there was a requirement
to complete and deliver any hardware.

2.1.3.2 Supplement 1 of the 4926 contract, dated December 31, 1943. extended
the work on ENIAC development from January 1, 1944, until June 30, 1944. In
January. 1944, Supi)lenient 2 was added to the 4926 contract to replace the original
anti-discrimination clause which was deleted from Supplement 1.

2.1.3.3 The second six months' work done under the 4926 contract, from Janu-
ary 1, 1944, through June 30. 19J4, resulted in the freezing of an ENIAC machine
de.sign and the completion of a two-accumulator ENIAC system was operating
by about June 30, 1944, and was used to solve second order differential equations
for a sine wave at the same pulse rate later used on the completed ENIAC
machine.

2.1.3.4 Supplement 3 to the 4926 contract extended the time period for the
work a third six months until December 31. 1944. Supplement 4 to the 4926 con-
tract provided for research and experimental work on an EDVAC from January
1 to September 30, 1945. The work done under the 4926 contract from July, 1944,
to December 31, 1944, was primarily directed toward production and manufac-
ture of the ENIAC machine and little work on EDVAC was done.

2.1.3.5 Supplement 5 to the 4926 contract, agreed to after the expiration of the
previous supplement providing for work on ENIAC, retroactively provided funds
for ENIAC work for a fourth six-month period from January 1 to June 30. 1945.
and added, for the first time, a requirement for the delivery of an ENIAC "pilot
model" machine. Supplements 1 to 3 of the 4926 contract had not required the
delivery of a pilot model of the ENIAC machine, but rather had provided for the
delivery to the Government at the contractor's plant of any equipment completed.
Neither the 4926 contract nor any of its supplements included performance
requirements for the ENIAC pilot model or a requirement that any hardware be
tested before being accepted by the Government.

2.1.3.6 Supplement 6 of the 4926 contract extended the delivery date of the
ENIAC pilot model to September 30. 1945. Although Supplement 6 of the 4926
contract required for the first time that the ENIAC pilot model be delivered and
accepted l)efore the final contract payment, the contract contained no requirement
that the macliinp do anything, meet any specifications or pass anv tests.

2.1.3.7 Supplement 7 to the 4926 contract, dated November 28, 1945. provided
for the extension of the work relating to ENIAC until December .31. 194.5, and
the work relating to EDVAC until January 31, 1946. Supplement 7 did not add
any performance requirements to be met prior to acceptance of ENIAC.

2.1. 3.S Supplements S and 9 to the 4926 contract affected onlv the EDVAC
work and did not provide for any further work relating to ENIAC".

2.1.3.9 No sub.' - equent supplement to the 4926 contract either extended the
completion date for the ENIAC work beyond December 31. 1945 or added per-
fonnancp roquirernents for the ENIAC machine.

2.1.3.10 The ENIAC maclune was in fact under the exclusive custody, dominion
and control of Army Ordnance from Dpceml)er 31. 1915. onward.

2.1.3.11 Siippleniont or change order 10 tn the 4926 contract did not provide for
any change in delivery date for the ENIAC pilot model or anv further ENIAC
work but merely corrected the contract term pertaining to place of delivery.
Supplements 11 and 12 to the 4926 contract did not in any way affect the delivery



5815

schedule or requirements for the ENIAC machine or provide for any further
EXIAO work.

2.1.3.12 Contract W-lS-OOl-ORD-1706 (hereinafter referred to as the 1706
contract), dated November 1, 1945, provided for services of the University of
Pennsylvania in connection with the initial operation of the ENIAC machine
pending completion of the Ballistic Research Laboratory Computing Annex
Building.

2.1.3.13 Army Ordnance operation of the ENIAC machine at the Moore
School was provided for by the 1706 contract, under which the University of
Pennsylvania supplied electrical power, space to house the ENIAC machine and
a Government computing group, and provided the services of two wiremen to
maintain the ENIAC machine for Army Ordnance. It was contemplated by the
Moore School that expenses incurred in the testing of the ENIAC machine by the
Moore School would be charged against the 4926 contract rather than the 1706
contract. Goldstine, as Army Ordnance representative at the Moore School, agreed
to approve bills for services under the 1706 contract in connection with the
operation of the ENIAC machine by Army Ordnance for the period beginning
December 1, 1945. Both the Moore School and Army Ordnance representatives
considered that the ENIAC machine was being operated rather than tested after
November, 1945.

2.1.3.14 In April of 1946, Dr. Travis, the then Director of Research at the
:Moore School, explained to Dean Pender that the Army was not charged imder
the 1706 contract in November, 1945, but was charged for December because in
November the Moore School engineers had still been testing the ENIAC machine.

2.1.3.15 Formal documentary confirmation of acceptance of the ENIAC machine
by Army Ordnance occurred after the University of Pennsylvania, on June 4,
1946, noted that the Government had been using the machine since December,
1945, and requested formal acceptance of the ENIAC, machine so that the final
payment to the University could be made.

2.1.3.16 Although formal acceptance of the ENIAC machine was not actually
documented until July 25, 1946, the ENIAC machine was at all times after Decem-
ber 10, 1945. in tlie custody, dominion and control of Army Ordnance.

2.1.4 The two-accumulator ENIAC system, called a "small ENIAC," embodied
"the invention" of the automatic electronic digital computer, and" was both on sale
and sold to Army Ordnance prior to the critical date.

2.1.4.1 The two-accumulator ENIAC system was constructed, fully tested and
sucessfully operated by July, 1944.

2.1.4.2 The requirement contained in the 4926 contract that all equipment com-
pleted prior to the termination of each contract period was to be delivered to the
Government F.O.B., floor of contractor's plant, was fully understood and complied
with by the parties to the contract. All contract payments required to be made
by the Government to the contractor pursuant to the 4926 contrac were made
by March, 1944, for work during the period ending December 31. 1943 ; by Septem-
ber. 1944. for the period ending June 30, 1944 ; and by August, 1945, for the period
ending Deceml)er 31, 1944.

2.1.4.3 Prior to July 3, 1944, the team at the University of Pennsylvania had
completed the construction of the two-accuraiilator ENIAC system comprising two
.ifcumiilator units, a cycling unit and associated power supplies. The two-ac-
cumulator ENIAC system was successfully employed in mid-1944 to solve the
second order differential equations for a sine wave and for a simple exponential at
the same operating speed used in the ENIAC machine and disclosed in the ENIAC
patent.

2.1.4.4 The tests on the two-accumulator ENIAC system were in essence a
successful test of the fundamental principles of design of the ENIAC machine.

2.1.4.5 The two-accumulator ENIAC system was an electronic numerical
integrator and computer. According to the ENIAC project progress reports, the

^two-acfumulator system constituted a small ENIAC machine.

2.1.4.6 Tlie 4926 contract did not require the two-accumulator ENIAC system



Online LibraryUnited States. Congress. Senate. Committee on theThe Industrial reorganization act. Hearings, Ninety-third Congress, first session [-Ninety-fourth Congress, first session], on S. 1167 (Volume pt. 7) → online text (page 123 of 140)